DABUS: AI missed opportunity?
The judgment by the English Court of Appeal regarding the DABUS case, addressing the patenting of inventions “invented” by artificial intelligence (AI), is distinguished by a dissenting judgment by Lord Justice Birss that on one hand criticises the arguments presented by appellant for the patenting of such inventions, and on the other hand, sets out arguments why the patenting of such inventions is compatible with current legislation in the UK.
To recap, the appeal relates to the deemed withdrawal of two UK patent applications naming an AI machine, Device for the Autonomous Bootstrapping of Unified Sentience (DABUS), as the inventor for failing to comply with the requirements in section 13 of the UK Patents Act 1977 to identify a person as an inventor and to establish how the applicant, Stephen Thaler—the owner of DABUS—derived the right to be granted the patent.
The two patent applications were directed to a food container and a form of flashing light. It was not in dispute that the requirements of novelty and inventive step were satisfied for the two patent applications.
Background
The DABUS patent applications arose from “The Artificial Intelligence Project”, the stated aim of which is to seek IP rights for inventions generated by an AI without a traditional human inventor (see www. artificialinventor.com). From the outset of his judgment, Birss appears distinctly unimpressed by the manner in which the appeal proceedings were conducted, stating: “At first sight, and given the way this appeal is presented by both parties, the case appears to be about AI and whether AI-based machines can make patentable inventions.
“In fact this case primarily relates to the correct way to process patent applications through the Patent Office (UKIPO) and turns on material which was either buried in the papers but ignored in the written and oral argument, or not referred to at all. It is an object lesson in the risks of advocacy being distracted by glamour.”
Birss breaks down the appeal into three core questions, which can be paraphrased as:
- Does the UK Patents Act require an inventor to be a person?
- What is section 13 of the UK Patents Act for and how does it work?
- What is the correct response to the information provided by Thaler?
Before addressing these questions, Birss tracks the legislative history relating to inventors and entitlement from the Statute of Monopolies of 1623 to the Banks Committee of 1970. From this analysis, Birss drew the following conclusions regarding the relevant provisions of the present UK Patents Act:
“i) The concept of the inventor was to be limited to the person who actually devised the invention.
- ii) Applications for patents could be made by anyone and the Comptroller, in granting a patent to the applicant, was not ratifying their claim to the right to be granted the patent.
iii) Applicants would no longer be required by law to name the inventor. They would simply be required to state who they believed the inventor to be. That is because the true identity of the inventor was no longer to be relevant to any question the Comptroller would have to decide when deciding to grant a patent to the applicant. In future the only relevance of the identification of the inventor was so that that inventor, if identified, could be mentioned in the published patent.
- iv) Arguments about entitlement to the grant of patents were to be resolved by a separate procedure and only at the suit of a person disputing ownership of the patent.”
With these conclusions in mind, with regard to question 1 Birss states that in the context of the present UK Patents Act, the inventor must be a person. This is not to say that the DABUS did not create the inventions, but rather that there is a statutory requirement for the inventor to be a person.
